Case 5:19-cv-00036-RWS Document 149 Filed 12/02/19 Page 1 of 11 PageID #: 6144
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE EASTERN DISTRICT OF TEXAS
`TEXARKANA DIVISION
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`MAXELL, LTD.,
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`v.
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`APPLE INC.,
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`Plaintiff,
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`Defendant.
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`Case No. 5:19-cv-00036-RWS
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`JURY TRIAL DEMANDED
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`MAXELL, LTD.’S OPPOSITION TO APPLE INC.’S
`MOTION TO COMPEL INFRINGEMENT CONTENTIONS COMPLIANT WITH
`PATENT RULE 3-1(G) OR, IN THE ALTERNATIVE, TO PRECLUDE MAXELL’S
`RELIANCE ON SOURCE CODE FOR INFRINGEMENT
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`Case 5:19-cv-00036-RWS Document 149 Filed 12/02/19 Page 2 of 11 PageID #: 6145
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`Maxell’s infringement contentions are exceptional. They are thorough and detailed and provide
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`Apple full notice of Maxell’s infringement theories. But Apple is not concerned with this. Apple wants
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`Maxell to provide early expert reports, identifying the precise evidence on which Maxell will rely at trial.
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`I.
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`Legal Standard
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`Rule 3-1 contentions “must be reasonably precise and detailed...to provide a defendant with
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`adequate notice of the plaintiff’s theories of infringement, [but] they need not meet the level of detail
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`required, for example, on a motion for summary judgment on the issue of infringement.” ROY-G-BIV
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`Corp. v. ABB, Ltd., 63 F. Supp. 3d 690, 699 (E.D. Tex. 2014). “The Rules do not require the disclosure of
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`specific evidence nor do they require a plaintiff to prove its infringement case....Infringement contentions
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`are not intended to require a party to set forth a prima facie case of infringement and evidence in support
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`thereof.” EON Corp. IP Holdings, LLC v. Sensus USA Inc., Case No. 6:09-cv-116, 2010 U.S. Dist. LEXIS
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`4973, at *8-9 (E.D. Tex. Jan. 21, 2010).
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`II.
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`ARGUMENT
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`Patent Rule 3-1(g) “affords a party alleging infringement an opportunity to delay compliance with
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`Patent Rule 3-1’s requirements for claim elements that may be satisfied by source code that has not yet
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`been produced.” Elbit Sys. Land & C4I Ltd. v. Hughes Network Sys., LLC, No. 2:15-cv-00037-RWS-RSP,
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`2017 WL 2651618, at *9 (E.D. Tex. June 20, 2017), report and recommendation adopted, No. 2:15-CV-
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`00037-RWS, 2017 WL 4693971 (E.D. Tex. July 31, 2017). But Maxell did not delay compliance with
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`P.R. 3-1. On June 12, 2019, Maxell served its original Infringement Contentions (“OIC”), including
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`twelve claim charts (of over 4,000 pages) identifying specifically where each element of each asserted
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`claim is found in the accused products. For select limitations, in addition to specifically identifying where
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`the limitation is found in accused products, Maxell also noted that the limitation implicates software,
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`firmware and/or source code and that Maxell would supplement its contentions in accordance with P.R.
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`3-1(g). Maxell did not avoid providing its infringement theories, but reserved its right to provide added
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`support from the code once the source code was available.
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`Case 5:19-cv-00036-RWS Document 149 Filed 12/02/19 Page 3 of 11 PageID #: 6146
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`A. Maxell’s Infringement Contentions Sufficiently Disclose Its Infringement Theories
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`Now Apple imposes two new requirements: 1) source code must independently provide a
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`plaintiff’s infringement theories and 2) a plaintiff must specifically identify the code on which it will rely
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`to prove infringement. Neither is mandated by law or necessary “to provide ‘all parties with adequate
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`notice and information with which to litigate their cases’ and deter ‘litigation by ambush.’” Mot. at 1.
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`Apple reads the source code citations in Maxell’s Supplemental Infringement Contentions (“SIC”)
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`in a vacuum, stating they leave Apple “at a loss as to Maxell’s actual infringement theor[ies].” Mot. at 4.
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`While this is hard to believe given it is Apple’s own source code, code is not the only evidence Maxell
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`provided. From the start Maxell identified its theory of infringement for each asserted limitation by
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`identifying how certain functionalities of the accused products meet the limitation (e.g., ’493 Patent: Pixel
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`Processing for Images and Image Stabilization) and then provided ample evidence and explanation,
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`including, for example, screenshots of the accused devices, user guides, website pages, etc. Pursuant to
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`P.R. 3-1(g), Maxell supplemented its contentions to include exemplary source code citations that further
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`support Maxell’s already-disclosed theories. There were no new “source code-based infringement
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`theories,” as Apple describes it. Maxell did not change any infringement theory from what was disclosed
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`in its OICs on June 12, 2019. Rather, Maxell supplemented with code citation to further support its
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`previously disclosed infringement theories.
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`As an example of an alleged deficiency, Apple points to element 1(d) of the ’493 Patent. An actual
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`review of the contentions, however, proves they are not the bare listing of code that Apple wants the Court
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`to believe. For example, Maxell provided examples of Apple’s infringement, such as the following:
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`On information and belief, the signal processing unit in the iPhone X mixes or culls pixel lines
`in order to downsample from about 4032 vertically arranged pixel lines used to display images
`having about 2436 vertically arranged pixel lines used to monitor in static image mode (for
`example, the number of vertically arranged pixels used in the iPhone X’s display screen). In
`mixing or culling the 4032 vertically arranged pixel lines of the iPhone X’s light-receiving
`sensor to the 2436 or fewer vertically arranged pixel lines used to monitor images in static
`image mode, the device’s signal processing unit reduces the signals from all N (4032)
`vertically arranged pixel lines by a factor of about 1.655 (for example, using approximately
`every other pixel line). By using only every other pixel line, the monitored image would
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`include only the odd-numbered (alternatively even-numbered) pixel lines from the original
`image, or a mixing of each odd-numbered pixel line with the adjacent even-numbered pixel
`line. Thus, in this example, the signal processing unit skips pixel lines of intervals of K1 = 1
`pixels. (In an alternative way of viewing Apple’s infringement, K1 may be 2 in this example.)
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`This alone provides Apple full notice of Maxell’s allegation of infringement. Yet Maxell also provided
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`screenshots from the accused devices to assert that “fewer than 2436 vertically arranged pixel lines are
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`used to monitor in static image mode due to the edges of the screen being used for menu items and other
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`information,” and that “the device monitors in still image mode”:
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`“fewer than 2436 vertically arranged pixel lines are
`used to monitor in static image mode due to the edges
`of the screen being used ….”
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`“device monitors in still image mode”
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`For support that other accused products mix or cull pixel lines from all N vertically arranged pixel
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`lines used to capture still images to the smaller subset of pixel lines used to monitor in static image mode,
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`Maxell provided a chart identifying exemplary values of N, pixel lines in monitoring mode, ratio, and K1
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`based on publically available information regarding the camera modules (an excerpt follows).
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`Infringing
`Product
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`Exemplary
`Values(s) of N
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`Exemplary Number of Pixel
`Lines in Monitoring Mode
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`Ratio
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`Exemplary Value of K1
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`iPhone 11
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`iPhone 11 Pro
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`4032
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`4032
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`iPhone 11 Pro Max
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`4032
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`1792
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`2436
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`2688
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`2.25
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`~1.655
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`1.5
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`1
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`1
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`1
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`As another example from Apple’s motion, the contentions for element 1(f) of the ’991 Patent are
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`similarly detailed.1 For element 1(f), Maxell asserts that each accused product “includes functionality
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`wherein when the processor receives an inbound videophone call notice while displaying the first digital
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`1 There are thirty accused products for the ’991 Patent that Maxell addressed in its review of code and the SICs.
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`information on the display, the processor pauses the displaying of the first digital information and renders
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`the camera operative” and provided links to technical specifications that show the devices include “Video
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`Calling,” “FaceTime,” and “TV” or video playback. As an example, Maxell asserts that when the iPhone
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`X receives an inbound videophone call notice while displaying the first digital information (e.g. video,
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`movie, etc.) on the display, the processor pauses the displaying of the first digital information and renders
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`the camera operative for a FaceTime call. Maxell provided the screenshots in support, such as the
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`following that demonstrates the events wherein the “first digital information” was received from the
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`iTunes Store (additional screenshots were provided for content received from the TV App and Browser):
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`Maxell further provided screenshots that show a similar series of events for the MacBook Pro 15.2.
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`Moreover, Maxell’s code citations are not broad or vague as Apple asserts. Whereas Apple focuses
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`on the number of citations, looking at their substance shows that the cited source code is narrow. By way
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`of example, the contentions cover a total of sixteen accused products for the ’493 Patent. Each of these
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`products includes a camera module that performs the claimed functionality (e.g., “mixing or culling”).
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`Maxell cited only those files within the
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` directories. The cited files describe
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`Mot. at 4, which amounts to less than
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`% of all Apple produced code.2 The relevant directories and
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`2 This case concerns 22 different versions of operating systems. The cited code for a particular limitation often included citations
`of the same files as produced across the different versions, increasing the number of citations but not the substance.
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`source code percentages for the remaining patents are included at Exhibit A. Reviewing Maxell’s
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`infringement contentions as a whole (narrative, screen shots, documentary citations/excerpts and source
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`code citation), it is clear that Apple’s Motion lacks merit and it is seeking to force Maxell to provide the
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`precise evidence it will rely on at trial prior to any expert reports/discovery. Apple’s attempts are improper.
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`B.
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`Pinpoint Citations Are Not Per Se Required and Are Not Necessary Here
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`Where a plaintiff’s infringement contentions meet P.R. 3-1’s requirements by other means, as
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`Maxell’s do, courts have not required pinpoint source code citations. This Court held that “[i]f a party
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`discloses how a ‘software limitation’ is met without reference to source code, and the party’s disclosure
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`otherwise meets Local Patent Rule 3-1’s requirements, there may be no need to later update infringement
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`contentions with references to source code.” Elbit, No. 2:15-cv-00037RWSRSP, 2017 WL 2651618, at
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`*9 (E.D. Tex. June 20, 2017), report and recommendation adopted, No. 2:15-CV-00037-RWS, 2017 WL
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`4693971 (E.D. Tex. July 31, 2017). In Finjan, Inc. v. Proofpoint, Inc., et al., the Defendant moved to
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`strike contentions with respect to source code citations or preclude the Plaintiff from relying on source
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`code evidence because the “infringement contentions only list source code directories, failing to explain
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`how the source codes support the infringement contentions or where the claim limitations are located
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`within the directories.” Case No. 13-cv-05808, 2015 WL 9023166, at *2 (N.D. Cal. Dec. 16, 2015). The
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`Court denied the motion, holding:
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`Although pinpoint citations to source code are one way of meeting Rule 3-1(c)’s requirement to
`identify specifically where each limitation of each asserted claim is found within a software
`patent, the Court has not been presented with any authority holding that pinpoint citations are the
`only way to meet its requirements. The rule’s purpose is to provide notice of the patentee’s theory
`of infringement, not to provide the evidence supporting that theory.
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`Id. at *3 (internal citations omitted).
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`In fact, no case cited by Apple supports its repeated assertion that the Patent Rules require pinpoint
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`citations to source code. Further, Maxell’s infringement contentions clearly provide Apple notice of
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`Maxell’s theories of infringement. In UltimatePointer, LLC v. Nintendo Co., the Court merely held
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`plaintiff to its voluntary agreement to provide pinpoint citations. No. 6:11-cv-496-LED, 2013 WL
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`6253767, at *3 (E.D. Tex. Dec. 3, 2013). There was no discussion that such citations are required. Id. In
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`other cases Apple cited, the Court ordered pinpoint citations because it deemed the plaintiff’s contentions
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`not otherwise sufficient under P.R. 3-1. See, e.g., Michael S Sutton Ltd. v. Nokia Corp., No. 6:07-cv-203,
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`2009 WL 9051240, at *2 (E.D. Tex. Feb. 13, 2009) (requiring pinpoint citations where plaintiff had
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`grouped steps and elements together without linking each to the referenced code and where plaintiff
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`offered only “a brief statement of function”); Treehouse Avatar LLC v. Valve Corp., No. C17-1860-RAJ,
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`2019, WL 917403, at *2 (W.D. Wash. Feb. 25, 2019) (stating the Court did not necessarily disagree that
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`pinpoint source code citations may not be required where contentions adequately identify the theory of
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`infringement by other means, but deemed more specificity was necessary in that particular case); Finjan,
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`Inc. v. Check Point Software Techs., Inc., No.18-CV-02621-WHO, 2019 WL 955000, at *7 (N.D. Cal.
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`Feb. 27, 2019) (ordering pinpoint citations where required by Narrowing Order issued by Court and
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`because plaintiff had not yet adequately disclosed its infringement theories); Kinglite Holdings Inc. v.
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`Micro-Star International Co., Ltd., No. CV-14-03009-JVS-PJWX, 2016 WL 6762573, at *3 (C.D. Cal.
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`June 15, 2016) (plaintiff had not persuaded the Court that more specificity was not required on the facts
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`before it); Zix Corp. v. Echoworx Corp., No. 2:15-cv-1272-JRG, 2016 WL 3410367, at *2 (E.D. Tex. May
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`13, 2016) (requiring supplementation where [no] source code citations in supplementation, despite
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`initially invoking P.R. 3-1(g), and where contentions were found to be vague and conclusory).
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`Finally, Apple’s claim that Maxell’s contentions are designed to tactically disadvantage Apple
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`because certain claim constructions are disputed (Mot. at 4) is without merit. While Maxell and its experts
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`will identify the specific evidence to prove such theories at trial, the time for that is not now. See, e.g.,
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`EON Corp., 2010 U.S. Dist. LEXIS 4973, at *8 (“The Rules do not require the disclosure of specific
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`evidence nor do they require a plaintiff to prove its infringement case….”).
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`C. Maxell Provided Fulsome Contentions Despite Apple’s Incomplete Production
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`This is the second time Apple has stated it tolled the deadline for Maxell to provide its P.R. 3-1(g)
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`contentions. See Mot. at 1; D.I. 116 at 1. That is blatantly misleading. In preparing the Protective Order,
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`Apple insisted it be given twenty-one days’ notice before the first inspection of source code.3 D.I. 45 at ¶
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`11(b). Apple’s position that this notice period counts against Maxell’s P.R. 3-1(g) deadline is improper
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`and would defeat the purpose of the patent rule to enable Maxell sufficient time to review code and prepare
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`supplemental contentions. Simply put, Apple’s code was not “available” until after the 21 days (Apple’s
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`statements to the contrary are misleading). Maxell’s review of the code began at that time. Moreover, the
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`deadline under P.R. 3-1(g) does not run “until 30 days after source code production for each Accused
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`Instrumentality is produced by the opposing party.” Because Apple is still producing relevant source
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`code, the 30-day deadline has not yet begun.
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`Moreover, Apple’s code production is still incomplete.4 Indeed, and as one core example, Apple
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`did not provide any means to link a set of code to a particular Accused Product or version of operating
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`system (
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`). Apple did not provide this information until three weeks after the SICs were
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`due. Apple also failed to produce certain code relevant to Maxell’s claims of infringement. When Maxell
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`identified missing code and explained its relevance, even though the relevance is plain from Maxell’s
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`contentions, Apple refused or delayed production. Maxell is still awaiting such code today. Despite all
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`this, Maxell provided detailed, thorough initial and supplemental infringement contentions that are more
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`than sufficient to meet P.R. 3-1’s requirements.5
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`I.
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`CONCLUSION
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`For the reasons set forth above, Maxell respectfully requests that the Court deny Apple’s Motion.
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`3 Apple’s assertion that Maxell did not begin the process of clearing its experts for source code review until after Apple made
`its source code production in August is demonstrably false. Maxell disclosed its experts on July 25, 2019. Apple objected to a
`single expert, but the parties resolved the issue on August 15, 2019. In an e-mail sent from Apple to Maxell on August 16,
`2019, Apple confirmed that it had already cleared Maxell’s experts for source code review. Ex. B (Excerpt of 8/16/19 e-mail).
`4 Maxell has never made the claim that the large volume of Apple’s source code has negatively impacted its ability to prepare
`contentions. Just the opposite, Maxell has repeatedly raised with Apple the deficient nature of its production as a hindrance to
`its contention preparation. Even in the face of such deficiency, however, Maxell has provided fulsome and sufficient SICs.
`5 For completeness, Maxell provides with this opposition a full set of its Supplemental Infringement Contentions for the Court’s
`review. Even a cursory review will establish how detailed and thorough they are, and how meritless Apple’s motion is.
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`Dated: November 27, 2019
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`By:
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`
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`/s/ Geoff Culbertson
`Geoff Culbertson
`Kelly Tidwell
`Patton, Tidwell & Culbertson, LLP
`2800 Texas Boulevard (75503)
`Post Office Box 5398
`Texarkana, TX 75505-5398
`Telephone: (903) 792-7080
`Facsimile: (903) 792-8233
`gpc@texarkanalaw.com
`kbt@texarkanalaw.com
`
`Jamie B. Beaber
`Alan M. Grimaldi
`Kfir B. Levy
`James A. Fussell, III
`Baldine B. Paul
`Tiffany A. Miller
`Saqib J. Siddiqui
`Bryan C. Nese
`William J. Barrow
`Alison T. Gelsleichter
`Clark S. Bakewell
`MAYER BROWN LLP
`1999 K Street, NW
`Washington, DC 20006
`Telephone: (202) 263-3000
`Facsimile: (202) 263-3300
`jbeaber@mayerbrown.com
`agrimaldi@mayerbrown.com
`klevy@mayerbrown.com
`jfussell@mayerbrown.com
`bpaul@mayerbrown.com
`tmiller@mayerbrown.com
`ssiddiqui@mayerbrown.com
`bnese@mayerbrown.com
`wbarrow@mayerbrown.com
`agelsleichter@mayerbrown.com
`cbakewell@mayerbrown.com
`
`Robert G. Pluta
`Amanda Streff Bonner
`MAYER BROWN LLP
`71 S. Wacker Drive
`Chicago, IL 60606
`(312) 782-0600
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`rpluta@mayerbrown.com
`asbonner@mayerbrown.com
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`Counsel for Plaintiff Maxell, Ltd.
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`Case 5:19-cv-00036-RWS Document 149 Filed 12/02/19 Page 11 of 11 PageID #: 6154
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that all counsel of record who are deemed to have consented to
`electronic service are being served this 27th day of November, 2019, with a copy of this document
`via the Court’s electronic CM/ECF system.
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`/s/ Geoff Culbertson
`Geoff Culbertson
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